WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roche Products Inc. v. Dmitriy Feschenko

Case No. D2010-1665

1. The Parties

The Complainant is Roche Products Inc. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Lathrop & Gage LLP, United States of America.

The Respondent is Dmitriy Feschenko of Zhytomyr, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <order-valium.net> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2010. On October 4, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On October 4, 2010, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 6, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 7, 2010.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 8, 2010. Regarding the Center’s notification of the Respondent, the Panel finds that the Respondent was properly notified according to the Rules.

In this sense, the Panel notes that:

- A copy of the Complaint and a Notification of the Commencement of Administrative Proceeding, were sent to the Respondent on October 8, 2010 by the Center to all contact details (fax and email) made known to the Center by the Complaint, and by the registrar eNom, and also to the email address found at the website to which the disputed domain name resolves and the email address <postmaster@order-valium.net>.

- The Written Notice was sent by post on the same day.

- The Center on the same day received an email communication which was sent in the name of “pricepills.com” from the email address found at the website to which the disputed domain name resolves.

- The Center did not receive any bounce back messages from the Respondent’s email addresses except from the email address used for the privacy service.

- The Written Notice was sent again by post on November 4, 2010, when the Center noted that it was inadvertently sent to the United Arab Emirates instead of Ukraine where the Respondent was located. Another 20 days was granted for the Respondent to respond to the Complaint.

In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2010. The Respondent did not submit any Response, other than the email communication mentioned above. Accordingly, the Center notified the Respondent’s default on November 26, 2010.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on December 6, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a member of the Roche group. The Complainant together with its affiliated companies is one of the leaders in research and development of pharmaceutical and diagnostic products and has global operations. The Complainant holds the VALIUM trademark for pharmaceutical psychotherapeutic agent registered worldwide, for example the United States Patent and Trademark Office trademark registration No. 725,548 and No. 1,314,271 (a design trademark consisting of a circular shaped tablet with a stylized “V” punched through the center of the tablet).

The parent company of the Complainant, F. Hoffmann-La Roche AG, owns and has registered the domain name <valium.com>.

Advertising and promotion for the Complainant’s Valium psychotherapeutic agent using the mark VALIUM has been extensively used and widely circulated by the Complainant in the United States of America, and the product has acquired fame and celebrity, symbolizing the goodwill that the Roche group has created in the United States and throughout the world.

For the purposes of this proceeding, this Panel considers the VALIUM trademark as a famous mark. In this sense, see F. Hoffmann-La Roche AG v. NetMarketing cc, WIPO Case No. D2005-1216, where the panel determined the VALIUM mark to be “well-known and notorious” and F. Hoffmann-La Roche AG v. Ashima Kapoor, WIPO Case No. D2005-1351 where the panel considered the Valium trademark a famous one)

The disputed domain name was registered in April 2010.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The trademark VALIUM has been in use in the United States since 1961.

- The trademark VALIUM designates a psychotherapeutic agent indicate for treatment and prevention of anxiety.

- The disputed domain name contains the entire VALIUM trademark of the Complainant and therefore is identical or confusingly similar to this mark.

- The Respondent has no rights or legitimate interests in the disputed domain name as the Complainant did not authorize the Respondent to use the VALIUM trademark.

- The Respondent’s use of the disputed domain name is disreputable. The Respondent’s website to which the disputed domain name resolves offers the Complainant’s Valium drug as well as the Complainant’s competitors’ anti anxiety products and other pharmaceutical products of competitors for sale through the linked sites at “www.allpillz.com”, “www.onlinerxpharma.com”, “www.ordertopmeds.com” and “www.pricepills.com”.

- The Respondent’s link sales sites offer the Valium drug without a prescription, which is illegal in the United States. Such use of the disputed domain name is an act of unfair competition which may cause significant harm to the Complainant reputation and negative consequences to those taking medication which is not appropriate to them.

- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. The Respondent registered and is using the disputed domain name in bad faith because of the following reasons:

- The Complainant’s mark VALIUM is not a generic word but an invented and coined term that enjoys an extremely strong reputation worldwide;

- There exists no relationship whatsoever between the Respondent and the Complainant, and the Complainant has not given the Respondent any permission to use in any way its famous mark VALIUM in a domain name to sell any Valium product;

- The Respondent was aware of the VALIUM trademark and seeks to divert Internet users to its website at the disputed domain name for its own commercial gain, all to the confusion of the public and detriment of the Roche group;.

- By operating the disputed domain name the Respondent has intentionally attempted to attract for financial gain Internet users to the Respondent’s website at the disputed domain name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or the goods on the Respondent’s website;

- Such websites to which customers were directed through the Respondent’s website have no legitimate business connection with the Complainant or its Valium psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith; and

- The website to which the disputed domain name resolved through the linked sites offered and sold the product Valium without a prescription or with an online doctor prescription which is not legal.

The cease and desist letter sent by the Complainant to the Respondent on September 3, 2010 had no effect. The Complainant requests that the disputed domain name is transferred to it.

B. Respondent

Despite of being properly notified, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

A.1.The Complainant holds rights in the VALIUM trademark

The Complainant has provided evidence showing that it is the owner of the VALIUM mark. The Panel is satisfied that the Complainant holds rights in the VALIUM trademark.

A.2. The disputed domain name is confusingly similar to the Complainant’s VALIUM trademark.

The disputed domain name incorporates the Complainant trademark in its entirety and adds a descriptive word “order” and the gTLD suffix “.net”.

Many UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to that trademark. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and F. Hoffmann-La Roche AG v. George McKennitt, WIPO Case No. D2005-1300, and Hoffmann-La Roche Inc. v. Patsy Hail, WIPO Case No. D2008-1343.

Moreover, the addition of the term “order” to the VALIUM mark does not make the disputed domain name distinctive from the Complainant’s trademark. The Panel notes that the term is descriptive and the Respondent’s website was linked to an online pharmacy which offers for sale products under the VALIUM mark. Consequently, the addition of this term to the Complainant’s trademark does not negate the confusing similarity between the VALIUM trademark and the disputed domain name. Rather, it strengthens the association by having people think that it relates to ordering the VALIUM drug. See Hoffmann-La Roche Inc. v. Patsy Hail, supra.

It is also now well-established that the confusing similarity thus created is not negated by the presence in the domain name of top level domain suffixes such as “.net”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has accordingly established the first of the three elements that it must prove.

B. Rights or Legitimate Interests

The Complainant must establish a prima facie showing under paragraph 4(a)(ii) of the Policy, and then the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests.

The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made by the Complainant. It cannot be contested that the Respondent has not been authorized to use the Complainant’s VALIUM mark on the Respondent’s website or to appropriate the mark for use as a domain name, and there is no indication that the Respondent has ever been commonly known by the disputed domain name.

It has to be noted that the Respondent’s website to which the disputed domain name resolves offered the Complainant’s VALIUM drug as well as the Complainant’s competitors’ anti anxiety products and other pharmaceutical products of competitors for sale through the linked sites at “www.allpillz.com”, “www.onlinerxpharma.com”, “www.ordertopmeds.com” and “www.pricepills.com”.

Moreover, those sites offer the Complainant’s Valium product without a prescription, and it is illegal in the United States. The Panel agrees with the Complainant that such use of the disputed domain name may have caused significant harm to the Complainant’s reputation and negative consequences to those taking medication which is not appropriate to them.

The Respondent has not submitted a Response to deny the Complainant’s assertions concerning the inappropriate nature of such use of the Complainant’s trademark or to explain why the disputed domain name was used in such a way when there is no obvious connection between the Complainant and the Respondent.

Under these circumstances, the Panel finds that the Respondent is not in any way engaged with, or preparing for, a bona fide offering of goods or services using the disputed domain name.

The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that that the Complainant has accordingly, also established the second of the three elements that it must prove.

C. Registered and Used in Bad Faith

The Panel finds on the present record in this case that the Respondent registered and is using the disputed domain name in bad faith.

The Panel is persuaded by the Complainant’s contentions that

- The Complainant’s mark VALIUM is not a generic word but an invented and coined mark that enjoys an extremely strong reputation worldwide.

- The Respondent was aware of the VALIUM trademark, and seeks to divert Internet users to its website at the disputed domain name for its own commercial gain, all to the confusion of the public and detriment of the Roche group.

- Such website to which customers were directed through the Respondent’s website has no legitimate business connection with the Complainant or its Valium psychotherapeutic agent product. Such unauthorized use of the Complainant’s mark suggests opportunistic bad faith.

- The website to which the disputed domain name resolved through the linked sites offered and sold the product Valium without a prescription or with an online doctor prescription which is not legal.

The Panel finds that the Respondent has sought to profit from and exploit the Complainant’s mark in violation of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied all the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <order-valium.net> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist
Dated: December 14, 2010